The opinion
THIS ORDER IS A
PRECEDENT OF THE TTAB
GCP Mailed: February 25, 2021
UNITED S TATES P ATENT A ND T RADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Information Builders Inc.
————
Serial No. 87753964
————
Howard F. Mandelbaum and Ira E. Silfin of Mandelbaum Silfin Economou LLP,
for Information Builders Inc.
Cynthia R. Smith, Trademark Examining Attorney, Law Office 107,
Leslie Bishop, Managing Attorney.
————
By the Board:
On April 30, 2020, the Board issued a final decision1 in this ex parte appeal
affirming the refusals to register Applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and on the ground that
Applicant failed to comply with the Examining Attorney’s requirement to provide a
1 A final decision is a final dispositive ruling that ends litigation on the merits before the
Board. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 901.02(a) (2020); see also Gal v. Israel Military Indus. of the Ministry of Defense of the State
of Israel, 1 USPQ2d 1424, 1427 (Comm’r 1986) (term “decision” has repeatedly been held to
mean “final decision”).
Serial No. 87753964
proper disclaimer pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a).
15 TTABVUE.
On July 1, 2020, Applicant filed a timely notice of appeal of the Board’s April 30,
2020 final decision to the U.S. Court of Appeals for the Federal Circuit (“Federal
Circuit”). 16 TTABVUE. Three months later, on October 16, 2020, Applicant filed
with the Federal Circuit a motion to voluntarily dismiss its appeal.2 On the same day,
Applicant filed with the Board an express abandonment of its involved application,
explaining that it no longer has a bona fide intent to use the involved mark in
commerce. 17 TTABVUE. Applicant included a closing statement that the
“abandonment of the present application is without prejudice.” Id. at 3. On October
20, 2020, the Federal Circuit granted Applicant’s motion and dismissed the appeal.
18 TTABVUE.
For the reasons explained below, Applicant’s October 16, 2020 submission of the
express abandonment of its involved application “without prejudice” is improper and
is of no effect.
An applicant may file an express abandonment of its application during the
prosecution of its application. Trademark Rule 2.68, 37 C.F.R. § 2.68. Under this same
rule, an applicant may file an express abandonment of its application during an ex
parte appeal to the Board. See TBMP § 1211. The rule does not apply, however, once
the Board issues a final decision. Cf. TBMP § 1217 and Trademark Rule 2.142(g), 37
2 We take judicial notice of this filing as an official record. See Weight Watchers Int’l, Inc. v.
I. Rokeach & Sons, Inc., 211 USPQ 700, 702 n.5 (TTAB 1981) (taking judicial notice of official
records where relevance is clear from record and briefs).
2
Serial No. 87753964
C.F.R. § 2.142(g). Once that happens, prosecution is over and a different rule ― Rule
2.142(g), 37 C.F.R. § 2.142(g) ― applies. See In re Johanna Farms, Inc., 223 USPQ
459, 460 (TTAB 1984) (after rendering a final decision, Board is without power to
entertain any request for additional prosecution except as provided in Rule 2.142(g));
TBMP § 1217 (“A case that has been considered and decided on appeal to the Board
may be reopened only as provided in 37 C.F.R. § 2.142(g).”).
Rule 2.142(g) provides, in pertinent part, that “[a]n application which has been
considered and decided on appeal will not be reopened except for the entry of a
disclaimer under section 6 of the Act of 1946 or upon order of the Director ….” Absent
reopening of the application under Rule 2.142(g) or a reviewing court order reversing
the Board’s decision, an application that has been decided on appeal stands
abandoned after a final decision of the Board affirming a refusal to register. See
generally TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 718.06 (October
2018) (“Applications that are abandoned after ex parte appeals . . . are considered
abandoned as of the date of the action that caused the application to abandon (e.g.,
affirming the examining attorney’s refusal. . .”) and TMEP § 718.05 (“An application
may also become abandoned because of failure to perfect an appeal, or dismissal of
an appeal, to the Court of Appeals for the Federal Circuit or civil court.”). 3
3 This same rationale applies when the refusal or requirement is expressly limited to certain
goods or services or to less than all of the classes in a multiple-class application. See
Trademark Rule 2.65(a)(1), 37 C.F.R. § 2.65(a)(1) (“If all refusals and/or requirements are
expressly limited to certain goods and/or services, the application will be abandoned only as
to those goods and/or services.”); see also TMEP §§ 718.02(a) and 1403.05.
3
Serial No. 87753964
Here, Applicant does not seek to enter a disclaimer nor is there an order of the
Director permitting Applicant’s purported express abandonment “without prejudice.”
Furthermore, no aspect of the disposition of Applicant’s appeal to the Federal Circuit
provides any basis to disregard or circumvent Rules 2.68 or 2.142(g). As noted above,
Applicant moved to voluntarily dismiss its appeal to the Federal Circuit, and the
Federal Circuit granted Applicant’s motion. There was no mandate vacating the
Board’s decision, directing the Board to do anything more, or allowing Applicant to
file this purported express abandonment.
In view of the foregoing, Applicant’s purported express abandonment of its
application “without prejudice” is not only untimely under Rule 2.68, but also
contravenes the limitations in Rule 2.142(g). The Board’s April 30, 2020 final decision
affirming the refusals to register Applicant’s mark remains as issued. Applicant’s
application stands abandoned as a result of that decision. Applicant cannot
circumvent that adverse Board decision by filing an express abandonment of the
involved application.4
Accordingly, Applicant’s express abandonment of its application “without
prejudice” cannot be given effect and is rejected.
4 Such an action not only is impermissible under the USPTO’s rules, but also would frustrate
the administrative process and runs contrary to the principle of finality of judgments. See
TMEP § 1217.
4